[E-trademarks] [EXT] Proposed shortening of Request for Reconsideration to Final Appeal
Pamela Chestek
pamela at chesteklegal.com
Tue Jan 7 16:47:40 UTC 2025
Is it me, or does the whole thing not make sense? The current rule
<https://tmep.uspto.gov/RDMS/TFSR/current#/current/r-b4d5f73a-8360-499f-ab67-97240ad8800c.html>
is titled "Reinstatement of applications and registrations abandoned,
cancelled, or expired due to Office error." Section (a) is request for
reinstatement of an abandoned application where there is an Office
error, section (b) is request for reinstatement of cancelled or expired
registration due to Office error, and (c) is request for reinstatement
may be construed as a petition. And there is no (c)(i).
Section 2.63
<https://tmep.uspto.gov/RDMS/TFSR/current#/current/r-ad80a6fe-ef1d-41bf-b515-5db1487bcc95.html>
is titled "Action after response" (not Final Action"), but it still
doesn't make much sense because it eliminates relevant information
formerly in the revised sections, as well as b(3) and b(4).
There is no CFR section titled "Final action." The TMEP has section 714
<https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-700d1e1814.html>
titled "Final Action," which refers to CFR section 2.63(b), not 2.64.
And the TMEP doesn't use that numbering format.
This rule is not listed under the "Proposed Rules" on the PTO Law &
Regulations <https://www.uspto.gov/trademarks/laws> website.
I'm leaning towards the fact this is an errant publication.
Pam
Pamela S. Chestek
Chestek Legal
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On 1/6/2025 9:18 PM, Lara Pearson via E-trademarks wrote:
> Here is the actual proposed text of the Proposed Amended Rule:
>
> 2. Amend Sec. 2.64 by revising paragraphs (b) and (c)(1) to read as
> follows:
>
> Sec. 2.64 Final action.
>
> * * * * *
>
> (b)(1) During the three-month period after issuance of a final action,
> the applicant may request that the examining attorney reconsider the final
> action. The request must be filed through TEAS. The filing of a request
> for reconsideration will not extend the time for filing an appeal or
> petitioning the Director.
>
> (2) During the six-month period after issuance of a final action, the
> applicant may submit amendments. Any such amendments will be examined, and
> will be entered if they comply with the rules of practice in trademark
> cases and the Act of 1946. The filing of such an amendment will not extend
> the time for filing an appeal or petitioning the Director.
>
> (c)(1) If an applicant in an application under § 1(b) of the Act files
> an amendment to allege use under Sec. 2.76 during the six-month period
> after issuance of a final action, the examiner shall examine the amendment.
> The filing of such an amendment will not extend the time for filing an
> appeal or petitioning the Director.
>
>
>
> Lara Pearson (she/her/hers)[Why pronouns
> <https://medium.com/gender-inclusivit/why-i-put-pronouns-on-my-email-signature-and-linkedin-profile-and-you-should-too-d3dc942c8743>?]
> (Hear how I say my name <https://namedrop.io/larapearson>)
>
> Law Office of Lara Pearson Ltd, PBC
>
> Leader, Brand Geek
>
> Lara at BrandGeek.net | Ph: 775.833.1600| My bio
> <http://brandgeek.net/about/>
>
> This e-mail may contain information that is *privileged* or
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>
>
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>
> *Protecting the Brands that are Changing the World**®*
>
> *Protecting the Businesses that are Changing the World**®
> Protecting the Brands of Soulfulpreneurs**®*
>
>
> *Leading the way, we belong to **1% for the Planet (since January
> 2006), SVN (since Spring 2007), **Certified B Corporation (since
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>
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>
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>
> *
>
> *I acknowledge my privilege to live, work and play on the unceded
> traditional lands of the first people of Lake Tahoe, the Washoe or
> Wašišiw ("people from here," pronounced Wa She Shu). With humility and
> gratitude, I honor this sacred land, and the Washoe Tribe
> <https://washoetribe.us/>. *
>
> *
> *
>
>
>
> On Mon, Jan 6, 2025 at 9:02 PM Alex Butterman
> <abutterman at dbllawyers.com> wrote:
>
> I think that proposed rule skips a step because the period from
> final OA to appeal is only 6 months if the applicant files an
> extension request *_BEFORE_* filing the Request for
> Reconsideration. Is the rule saying that the filing of a RFR by 3
> months automatically extends the appeal deadline to six months?
> And with or without payment of the $125 fee?
>
> That rule does sound like the PTO making the applicant pay for the
> PTO’s inability to process a RFR and Notice of Appeal
> simultaneously rather than just fix internally whatever is
> screwing up that process. Maybe the PTO should alter is examiner
> jurisdiction rules.
>
> *Alex Butterman*
>
> Partner****
>
> *DUNLAPBENNETT&LUDWIG <https://www.dbllawyers.com/>*
>
> /211 Church St., SE; Leesburg, VA 20175/
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>
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>
> *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On
> Behalf Of *Lara Pearson via E-trademarks
> *Sent:* Monday, January 6, 2025 10:57 PM
> *To:* Carl Oppedahl <e-trademarks at oppedahl-lists.com>
> *Cc:* Lara Pearson <lara at brandgeek.net>
> *Subject:* [EXT] [E-trademarks] Proposed shortening of Request for
> Reconsideration to Final Appeal
>
> Happy New Year list friends:
>
> I hope you all had a delightful holiday break and are finding
> things to look forward to this year.
>
> I have a response to a Final OA and was researching whether
> there'd been a change in the response time from 6 to 3 months, and
> came across this Dec 31, 2024 USPTO Notice of Proposed Rule
> <https://www.uspto.gov/web/offices/com/sol/og/2024/week53/TOCCN/item-469.htm>,
> which I don't recall seeing discussed here (forgive me if it was,
> and I missed it):
>
> The United States Patent and Trademark Office ("USPTO") proposes to
>
> amend 37 C.F.R. Sec. 2.64 to require a request for
> reconsideration of
>
> an examining attorney's final refusal or requirement to be filed
> through
>
> the Trademark Electronic Application System ("TEAS") within three
>
> months of the mailing date of the final action. ***
>
> A request for reconsideration of a final action does not extend
> the time
>
> for filing an appeal or petitioning the Director on that action.
> Under the
>
> current version of the rule, wherein the applicant may file a
> request for
>
> reconsideration at any time between the final action and the six-month
>
> deadline for appealing or petitioning, many applicants
> simultaneously seek
>
> reconsideration and file an appeal. Because the examining attorney
> loses
>
> jurisdiction over the application upon the filing of an appeal to
> the TTAB,
>
> this simultaneous pursuit of reconsideration and appeal often
> necessitates
>
> a remand by the TTAB to the examining attorney for a decision on the
>
> request for reconsideration. If the request is denied, then the
> case is
>
> transferred back to the TTAB. If the request is granted, and the
> examining
>
> attorney reconsiders the final action, the appeal or petition may
> become
>
> moot. The need for these remands and transfers contributes to the
> burden on
>
> the applicant and the USPTO, and prolongs the pendency of the case.
>
> In order to eliminate some appeals and petitions and reduce the
> need for
>
> these remands and transfers, the proposed rule provides that a
> request for
>
> reconsideration must be filed within three months of the final action,
>
> while the six-month period for appeal or petition remains unchanged.
>
> Comments must be received by [60 days from the date of publication
> in the Federal Register] to ensure consideration.
>
> I agree with the rationale here, but I'm not sure the process is
> the best to meet the stated goals, given the shortened evidentiary
> timeline.
>
> Curious what others think.
>
> Cheers!
>
> Lara Pearson (she/her/hers)[Why pronouns
> <https://medium.com/gender-inclusivit/why-i-put-pronouns-on-my-email-signature-and-linkedin-profile-and-you-should-too-d3dc942c8743>?]
> (Hear how I say my name <https://namedrop.io/larapearson>)
>
> Law Office of Lara Pearson Ltd, PBC
>
> Leader, Brand Geek
>
> Lara at BrandGeek.net | Ph: 775.833.1600 |My bio
> <http://brandgeek.net/about/>
>
> This e-mail may contain information that is *privileged* or
> *confidential*. If you received this communication in error,
> please immediately notify the sender and delete/destroy all copies
> of this correspondence. Thank you.
>
> *Brand Geek practices flex-time and a 4-day work week
> Mon-Thurs. If you see us working weekends, that's our choice. We
> do not expect anyone (including you!) to work/respond on the
> weekend. Please respond at a time that works for you. *
>
> *Protecting the Brands that are Changing the World®*
>
> *Protecting the Businesses that are Changing the World®
> Protecting the Brands of Soulfulpreneurs**®*
>
> *Leading the way, we belong to 1% for the Planet (since January
> 2006), SVN (since Spring 2007), Certified B Corporation (since
> February 2008).*
>
> *Save the planet! Please don't print.*
>
> *I acknowledge my privilege to live, work and play on the unceded
> traditional lands of the first people of Lake Tahoe, the Washoe or
> Wašišiw ("people from here," pronounced Wa She Shu). With humility
> and gratitude, I honor this sacred land, and the Washoe Tribe
> <https://washoetribe.us/>. *
>
> **
>
>
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